VIVIA BIOTECH, S.L.

Patent Trials and Appeals Board

Feb 4, 2020

15460872 - (D) (P.T.A.B. Feb. 4, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/460,872 03/16/2017 Juan Ballesteros 631-88-CON-091 5758
79683 7590 02/04/2020
OLIVE LAW GROUP, PLLC
BENTLEY J OLIVE
125 EDINBURGH SOUTH DRIVE
SUITE 220
CARY, NC 27511
EXAMINER
AEDER, SEAN E
ART UNIT PAPER NUMBER
1642
NOTIFICATION DATE DELIVERY MODE
02/04/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
bjolive@olivelawgroup.com
docket@OLIVELAWGROUP.COM
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUAN BALLESTEROS, TERESA BENNETT, DANIEL PRIMO,
ALBERTO ORFAO, COYT JACKSON, SANTIAGO LAGO,
MARIA MATOSES, LILIA SUAREZ, SANDRA SAPIA,
ANDREW BOSANQUET, JULIAN CORROCHATEGUI,
CONSUELO TUDELA, PILAR HERNANDEZ, and
LUIS IGNACIO CAVEDA1
Appeal 2019-005710
Application 15/460,872
Technology Center 1600
Before ERIC B. GRIMES, ULRIKE W. JENKS, and JOHN G. NEW,
Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
method of determining the responsiveness of cells to drugs, which have been
rejected as indefinite and obvious. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.

1 Appellant identifies the real party in interest as Vivia Biotech, S.L. Appeal
Br. 3. We use the word Appellant to refer to “applicant” as defined in 37
C.F.R. § 1.42(a).
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Application 15/460,872

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STATEMENT OF THE CASE
The Specification describes “a cell-based screening platform that
incorporates both automated sample preparation and automated evaluation
by flow cytometry that is useful as a personalized medicine test because of
its rapid data acquisition, analysis, and reporting of results.” Spec. ¶ 2.
Claims 56–65 and 67–71 are on appeal. Claim 56, reproduced below,
is illustrative:
56. A method for analyzing a patient’s cellular responsiveness to
drugs and for identifying a patient’s resistance to a drug composition,
comprising:
a. Obtaining a sample of whole blood, whole peripheral
blood or whole bone marrow that has been withdrawn
from a patient, having a hematological neoplasm;
b. dividing the whole sample into at least 35 aliquots;
c. distributing each aliquot in a well of a plate;
d. combining each of the at least 35 aliquots with the drug
composition in the well and incubating said drug
composition with the aliquot for more than 4 hours; and
e. counting cells in each of the at least 35 aliquots in an
automated flow cytometry platform comprising
automated sample preparation and automated input to a
flow cytometer, thereby providing counts of cells,
wherein the counts of cells that are no longer alive
relative to a control aliquot without the drug composition
provides a percentage of cancer cell depletion.

The claims stand rejected as follows:
Claims 56–65 and 67–71 under 35 U.S.C. § 112, second paragraph, as
indefinite (Ans. 3);
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Claims 56–65 and 67–71 under 35 U.S.C. § 103(a) as obvious based
on Mitsuhashi I,2 Mitsuhashi II,3 Edwards,4 and Bargou5 (Ans. 3–4); and
Claims 56–65 and 67–71 under 35 U.S.C. § 103(a) as obvious based
on Mitsuhashi I, Mitsuhashi II, Edwards, and Mølhøj6 (Ans. 8).
OPINION
Definiteness
Claims 56–65 and 67–71 stand rejected under 35 U.S.C. § 112,
second paragraph, on the basis that “[t]here is insufficient antecedent basis
for ‘the counts of cells that are no longer alive.’” Ans. 3. The Examiner
notes, however, that “the following amendment to claim 56 would obviate
this rejection: ‘the counts of cells that are no longer alive’.” Id.
“Appellant . . . would be amenable to an Examiner’s amendment
consistent with the Examiner’s suggestion should prosecution be reopened
or the case is otherwise allowed.” Appeal Br. 9.
Because Appellant does not dispute the merits of the rejection under
35 U.S.C. § 112, second paragraph, we affirm it.

2 Ex Vivo Simulation of the Action of Antileukemia Drugs by Measuring
Apoptosis-Related mRNA in Blood, Clinical Chemistry 54:673−681 (2008).
3 Ex Vivo Induction of mRNA in Human Whole Blood as a New Platform of
Drug and Dietary Supplement Development, Pharmaceutical Research
25:1116−1124 (2008).
4 High-Throughput Cytotoxicity Screening by Propidium Iodide Staining,
Current Protocols in Cytometry 9.24.1−9.24.11 (2007).
5 Tumor Regression in Cancer Patients by Very Low Doses of a T Cell-
Engaging Antibody, Science 231:974–977 (2008).
6 CD19-/CD3-bispecific antibody of the BiTE class is far superior to
tandem diabody with respect to redirected tumor cell lysis, Molecular
Immunology 44:1935−1943 (2007).
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Obviousness
Claims 56–65 and 67–71 stand rejected as obvious based on
Mitsuhashi I, Mitsuhashi II, Edwards, and either Bargou or Mølhøj.
Appellant relies on the same arguments with respect to both rejections.
Appeal Br. 19. We will therefore address them together.
The Examiner finds that Mitsuhashi I teaches a method comprising
providing a whole sample (whole blood) obtained from the
patient that includes neoplastic cells; incubating numerous
aliquots of the whole sample with a different drug or
combination of drugs . . . “overnight”; analyzing each aliquot of
the whole sample with methods including using flow cytometer
(FACS) and FITC-labeled Annexin V to count live cells vs
those cells becoming apoptotic in aliquots relative to control
aliquots . . . ; and generating a report of results of a plurality of
drugs or drug combinations from the analysis step indicating
the degree of apoptosis or cell depletion of each treated aliquot.
Ans. 4. The Examiner cites Mitsuhashi II for its disclosure of the advantages
of whole blood assay systems, like those in Mitsuhashi I, over systems using
cells in culture. Id. at 5.
The Examiner finds that Mitsuhashi I does not teach using at least
thirty-five aliquots from a single patient, id., but that Edwards teaches
a high-throughput automated method of screening cytotoxic
activity of compounds comprising obtaining a sample of cancer
cells, dividing the sample into 384 aliquots, distributing each
aliquot in a well of a plate, combining each of the aliquots with
a drug in the well, incubating the drug composition with the
aliquot for at least 24 hours, and counting cells in each aliquot
in an automated flow cytometry platform comprising automated
sample preparation and automated input to a flow cytometer,
thereby providing counts of cells, wherein counts of cells that
are no longer alive relative to a control aliquot without the drug
composition provides a percentage of cancer cell depletion.
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Id. at 6. The Examiner cites both Bargou and Mølhøj for their disclosure of
the elected species of drug (blinatumomab) and assays to determine its
therapeutic effect based on cell lysis. Id. at 6, 10.
The Examiner concludes that it would have been obvious
to predict responsiveness of leukemia and lymphoma patients to
cancer treatments by performing the method of Mitsuhashi I
using numerous (including 100+) aliquots of whole blood
wherein each aliquot is in a well . . . using a high-throughput
automated flow cytometry platform comprising automated
sample preparation and automated input to a flow cytometer
wherein each aliquot is treated with various therapeutics.
Id. at 6–7. The Examiner also concludes that it would have been obvious to
measure apoptosis and/or cell lysis “because therapeutics are known to
function by inducing apoptosis (as demonstrated by Mitsuhashi I)” and both
Bargou and Mølhøj teach measuring drug effectiveness based on cell
depletion or lysis. Id. at 7, 11. Finally, the Examiner concludes that it would
have been obvious to use Edwards’ automated flow cytometry method
because “a high-throughput automated method that has the benefit of
overcoming time delay issues associated with conventional flow cytometry
handling.” Id. at 7.
We agree with the Examiner that the method of claim 56 would have
been obvious to a person of ordinary skill in the art based on the cited
references. Mitsuhashi I discloses a method for predicting the response of
individual cancer patients to particular drugs. Mitsuhashi I 673, right col.
Mitsuhashi I discloses an assay for leucocyte apoptosis based on mRNA
expression levels of p21 and PUMA. Id. at 674, left col.
Mitsuhashi I states that samples of whole blood were obtained from
“patients with various blood malignancies.” Id. Mitsuhashi I also states that
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blood was drawn from eighteen patients with acute myelogenous leukemia
(AML) and “stimulated with the appropriate drugs.” Id. at 674, right col.
Mitsuhashi I teaches that 70 µL aliquots of blood samples were combined
with specific drugs, at specific concentrations. Id. (under the heading
“BLOOD STIMULATION”).
Mitsuhashi I describes mRNA quantification for p21 and PUMA. Id.
at 674–675. Mitsuhashi I also states that they carried out annexin V analysis
by “incubat[ing] 70 µL samples of blood from 5 AML patients overnight
with the drug,” then lysing erythrocytes, and incubating the resulting
leukocyte suspension with fluorescein isothiocyanate-labeled annexin V and
propidium iodide. Id. at 675, left col. Mitsuhashi I “then analyzed annexin V
binding via flow cytometry.” Id. at 675, right col.
Mitsuhashi I compared the results of the mRNA assay with
“conventional apoptosis assays,” including “the annexin V fluorescence-
activated cell sorting (FACS) analysis.” Id. (under the heading “mRNA
ASSAY VERSUS CONVENTIONAL APOPTOSIS ASSAYS”).
Mitsuhashi I concludes that “[t]he ex vivo mRNA analyses yielded more
positive results than the biological assays” (including the annexin V FACS
assay), which “indicates that the mRNA assay may have better analytical
sensitivity than these [] conventional assays, or that it may produce more
false-positive reactions.” Id. at 678, right col.
Thus, Mitsuhashi I teaches a method for analyzing a patient’s
response to a drug comprising obtaining a sample of whole blood from a
patient having a hematological neoplasm; dividing the sample into aliquots,
combining the aliquots with a drug, and incubating overnight; then using the
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conventional annexin V FACS (i.e., flow cytometry) assay to count
apoptotic cells as a measure of cell death. Cf. Spec. ¶ 91: “This system can
determine the ex vivo therapeutic index by measuring the ability of a drug
composition to induce apoptosis. . . . In a specific embodiment, the method
uses Annexin V coupled to Fluorescein Isothiocyanate (FITC) to detect . . .
apoptotic cells.”
Mitsuhashi I does not disclose (a) dividing a sample into at least 35
aliquots, (b) distributing aliquots to wells of a plate, or (c) carrying out
automated flow cytometry comprising automated sample preparation and
automated input to a flow cytometer, as recited in claim 56.
However, Edwards describes “a system for the automated high-
throughput analysis of cell cytotoxicity in 96-well and 384-well
microplates.” Edwards 9.24.1. Edwards states that “[a]utomated handling for
flow cytometry in sample-tube carousels has recently evolved to microplate
formats.” Id. Edwards provides an example of cytotoxicity screening in 384-
well format with automated liquid handling. Id. at 9.24.1–9.24.5. Edwards
states that “high-throughput automation platforms capable of liquid
handling, plate movement, shaking devices, and temperature control are now
available in a variety of configurations. Systems capable of dispensing
nanoliter volumes into a variety of plate formats have substantially reduced
the requirement for expensive or low-abundance reagents and assay setup
time.” Id. at 9.24.7.
Bargou reports that “a bispecific antibody construct called
blinatumomab . . . has the potential to engage all cytotoxic T cells in patients
for lysis of cancer cells. Doses as low as 0.005 milligrams per square meter
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per day in non-Hodgkin’s lymphoma patients led to an elimination of target
cells in blood.” Bargou 974, abstract. “The decline of CD19+ cells [in a
patient] was accompanied by expression of apoptosis marker annexin V . . . ,
indicating lysis . . . of target cells.” Id. at 975, left col.
Based on the teachings, it would have been obvious to combine the
conventional annexin V FACS assay of Mitsuhashi I with Edward’s system
for automated high-throughput analysis of cell cytotoxicity in 96- or 384-
well microplates, because Edwards teaches that the automated platforms
capable of liquid handling, etc. substantially reduce the requirement for
expensive or low-abundance reagents and reduce assay setup time, thus
making the manual process of Mitsuhashi I more efficient. It would also
have been obvious to include Bargou’s blinatumomab (the elected species of
drug) in such a cytotoxicity assay, because Bargou teaches that it has the
potential to engage cytotoxic T cells in patients, causing lysis of cancer cells;
thus, a skilled artisan would have recognized that it is a suitable candidate
for cytotoxicity testing.
Appellant argues that, although Mitsuhashi I used flow cytometry to
measure annexin V as an apoptosis marker, “the traditional apoptosis marker
analyses are being used to merely prove the efficacy of Mitsuhashi I’s new
mRNA test.” Appeal Br. 13. Appellant argues that
the results in Mitsuhashi I relating to the Annexin V analysis,
i.e., the apoptosis marker, are qualitative to the reader. There is
no way to identify which drugs, drug concentrations or
combinations of drugs are associated with which data point in
Figure 1. The Annexin V results were provided merely to verify
if the mRNA experiments proposed by Mitsuhashi I are a viable
candidate platform for drug-sensitivity tests in leukemia.
Id. at 15.
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Similarly, Appellant argues that
[i]f we were to combine Edwards with Mitsuhashi I, as
proposed by the Examiner herein, all that would happen is that
the Annexin V analysis in Mitsuhashi I would be automated.
. . . Using an automated flow cytometry system such as that
from Edwards in the Mitsuhashi I Annexin V analysis (the only
place it would be used) just makes the acquisition of the data
for the FACS analysis more rapid.
Id. at 17–18.
These argument are unpersuasive because, as the Examiner has noted,
“knowledge of which drugs, drug concentrations, or combinations of drugs
are associated with which data point in Figure 1 is not required to perform
the method rendered obvious by the combination of cited references.” Ans.
14. That is, Mitsuhashi I is cited as evidence that it would have been obvious
to use the conventional annexin V FACS (flow cytometry) assay to
determine whether a drug was effective to cause apoptosis and cell death in
cancer cells from a patient, not as evidence that a particular drug or drug
combination was shown to be effective in the samples tested by Mitsuhashi
I. Appellant’s argument does not show any error in the rejection on appeal.
Appellant also argues that
Mitsuhashi I reported that the positive results may be false-
positives for the mRNA results. . . .
Alternatively, Mitsuhashi I disclosed that ex vivo mRNA
analysis yielded more positive results than . . . annexin V
analys[i]s. . . . [I]n this scenario, there would be no reasonable
expectation of success to use the annexin V analysis to analyze
a patient’s cellular responsiveness to drugs and for identifying a
patient’s resistance to a drug composition, as claimed by
Appellant herein, because the results may be unacceptable
because of a lack of sensitivity. Why run hundreds or thousands
of individual tests to try to individualize the treatment for a
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person if the results are only as good as the less sensitive
detection method?
Appeal Br. 16–17.
This argument is also unpersuasive. As Appellant points out,
Mitsuhashi I found that its mRNA assay yielded more positive results than
the conventional annexin V FACS assay. Mitsuhashi I 678, right col.
Mitsuhashi I states that “[t]his finding indicates that the mRNA assay may
have better analytical sensitivity than these 2 conventional assays, or that it
may produce more false-positive reactions.” Id. The uncertainty expressed
by Mitsuhashi I regarding whether the mRNA test was actually more
sensitive provides sufficient reason to use the conventional (art-accepted)
annexin V assay to detect apoptosis, in order to minimize the number of
false positive results. Appellant’s argument that the annexin V FACS
analysis would not provide a reasonable expectation of success is
unpersuasive because Mitsuhashi I characterizes it as a “conventional” assay
for apoptosis. Mitsuhashi I 678, right col. The assay’s conventional nature
indicates that it was accepted as sufficiently accurate by those skilled in the
art.
For the reasons discussed above, we affirm the rejection of claim 56
under 35 U.S.C. § 103(a) based on Mitsuhashi I, Mitsuhashi II, Edwards,
and Bargou. Claims 57–65 and 67–71 fall with claim 56 because they were
not argued separately. 37 C.F.R. § 41.37(c)(1)(iv).
Appellant relies on the same arguments with regard to the rejection of
claims 56–65 and 67–71 under 35 U.S.C. § 103(a) based on Mitsuhashi I,
Mitsuhashi II, Edwards, and Mølhøj. Appeal Br. 19. We therefore affirm
that rejection as well.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
56–65, 67–
71
112, second
paragraph
Indefiniteness 56–65, 67–
71

56–65, 67–
71
103(a) Mitsuhashi I,
Mitsuhashi II,
Edwards, Bargou
56–65, 67–
71

56–65, 67–
71
103(a) Mitsuhashi I,
Mitsuhashi II,
Edwards, Mølhøj
56–65, 67–
71

Overall
Outcome
56–65, 67–
71

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED